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Practical Implications: First-to-File vs. First-to-Invent

by Alexandria J. Senn, Associate Attorney, Williamson Intellectual Property Law, LLC, Atlanta, GA

The United States Patent Office follows a First-to-Invent system. That is, patent rights are granted to an entity or person that is the first to invent a new, non-obivous and useful invention. The rest of the world follows a First-to-File system, wherein patent rights are granted to the person or entity who is the first to file a patent application.

The big debate is whether the United States should adopt the First-to-File system. The Patent Reform Act of 2007 (the “Act’) proposed such a change, has passed Congress and is currently awaiting passage in the Senate. If the Act passes in the Senate, which many believe will be the case, the United State’s First-to-Invent system will cease to exist.

Proponents of the Act argue that the United States should adopt the First-to-File system to harmonize the United States patent system with the rest of the world. Additionally, proponents argue the First-to-File system is beneficial because it provides a clear, bright-line approach in determining the owner of a patent by simply looking to who filed the patent application paperwork.

On the other hand, opponents to the Act argue that the First-to-File structure will hurt small businesses and individual inventors. They argue the First-to File system is harmful to small business owners and individual inventors because they have limited resources to file a patent application. As such, opponents argue the First-to File system benefits big businesses that can afford filing patent applications, which can cost anywhere from $5,000 to $25,000.

Nonetheless, the United States currently follows a First-to-Invent system and it is important to take note of the implications. First, patent rights are granted to the person or entity that is the first to invent and the person or entity that diligently reduces the invention to practice. Reduction to practice may be established by filing a patent application or by practicing the invention. Thus, it is important to note that, even if an inventor is the first to invent, the inventor still must diligently reduce the invention to practice or risk losing his or her patent rights.

Additionally, it is beneficial for inventors to keep journals or documentation with respect to their invention under the First-to-Invent system. The reason for this is that if two inventors with substantially similar subject matter both claim rights to an invention, (this is called an “interference”) then patent rights are granted to the inventor who can establish the earlier inventive date. As such, records and documentation with respect to the invention can be useful as corroborative evidence of an earlier inventive date.

For more information on the patent process, please visit Patent Information.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100
Atlanta, GA 30339
770-777-0977
http://www.trwiplaw.com
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Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100 - Atlanta, Georgia 30339